Copyright

Enforcement

Jane Lambert
Sep 2002
Last updated 6 Feb 2006

Introduction
Most copyright proceedings are infringement disputes, that is to say complaints by copyright owners or their exclusive licensees that their copyrights have been, or are about to be, infringed. However, there are also appeals from the Copyright Tribunal. disputes between licensors and licensees over the terms of their licence agreements, proceedings between individuals who claim to have contributed to, or to be otherwise entitled to claim or share in copyrights as well as claims of infringement of moral rights. All such proceedings are chancery business and should proceed in the Chancery Division or a county court with a chancery list. Thus, if proceedings are to be brought in the High Court they should be issued out of Chancery Chambers of the Royal Courts of Justice in London or the Manchester, Liverpool, Preston, Leeds, Newcastle, Birmingham, Bristol or Cardiff District Registries. Proceedings may also be issued out of the Central London or Manchester, Liverpool, Preston, Leeds, Newcastle, Birmingham, Bristol or Cardiff County Courts.

Alternatives to Litigation
The only type of dispute commonly referred to arbitration are licensing disputes. That is because a contract already subsists or has subsisted between the parties. In many cases their agreement refers disputes to arbitration. In all other disputes the scope for arbitration or alternative dispute resolution is limited. Absent special circumstances such as parallel claims in multiple jurisdictions there is rarely any incentive for parties to negotiate an arbitration agreement if they are not already contractually bound. Moreover, in piracy claims the priority is to seek an interim injunction which relief is available only from the court. There is slightly more scope for mediation or other forms of alternative dispute resolution to settle particular issues but in most cases after the action is well under way.

Pre-Action Negotiations
Unless there is reason to believe that an alleged infringer will hide or destroy evidence, remove or dissipate assets or take some other step to frustrate justice should he have notice of a claim, a complainant will usually issue a letter of claim. There is a general duty "to act reasonably in exchanging information and documents relevant to the claim and generally in trying to avoid the necessity for the start of proceedings" even where there is no relevant pre-action protocol (para 4.1 of PD-Protocols). Though there is no pre-action protocol for copyright disputes a working party chaired by Michael Skrein of Richards Butler (that included Sir Hugh Laddie)  has published a Code of Practice for Pre-action Conduct in IP Disputes. Paragraph 6 of the Code recommends parties to consider arbitration and ADR.

Pre-emptive Relief
Where there is reason to fear that an alleged infringer will hide or destroy evidence the copyright owner can apply to the court without notice to the defendant for a "doorstep Piller" order, that is to say an order requiring delivery up of relevant material to the solicitors who serve the order or, in an extreme case, a search order requiring those in charge of premises to admit solicitors to search the premises for specified materials and remove them for safe. If it is feared that a defendant will try to hide, dissipate or remove assets from the jurisdiction of the courts to frustrate an award of damages or other pecuniary remedy the High Court can grant a freezing injunction requiring him to disclose the whereabouts of his assets and restricting his expenditure to normal business expenses and the defence of the action.

Commencing Proceedings
Claim Form: Except for appeals from the Copyright Tribunal and disputes over entitlement where the facts may not be in dispute and proceedings under CPR Part 8 may be appropriate, most copyright proceedings will commence with the issue of a CPR Part 7 claim form.
Particulars of Claim: The claim form must be accompanied or followed by particulars of claim within 14 days pursuant to CPR 7.4. CPR 16.4 (1) (a) requires those particulars to contain concise statement of the facts on which the claimant relies. Appendix 1 of the Chancery Guide provides useful guidelines on settling particulars of claim. In an infringement claim, for example, the claimant has to identify the copyright work, define the copyright that he or she claims, show how copyright subsists in the work and that he or she is entitled to such copyright. He or she must specify the infringement and in particular the infringing act highlighting similarities upon which the claimant relies and the defendant's access to the claimant's work. If secondary infringement is alleged, the claimant must point to facts and matters establishing the defendant's knowledge of, or reason for belief that there had been or would be, a primary infringement. Finally, the claimant must show grounds for injunctions, delivery up and forfeiture of infringing copies and additional damages pursuant to s.97 (2) of the Copyright Designs and Patents Act 1988 ("the CDPA"). In settling particulars of claim the claimant's legal advisor may be assisted by the presumptions contained in s.104 to 106 of the CDPA.

Interim Injunctions
Even though pre-emptive relief of the kind described above is not always necessary, there is usually a substantial interval between issuing proceedings and trial which, in the case of popular music, games programs and similar goods can be as long as they are likely to be in fashion. To protect its market a copyright owner may have to apply for interim injunctive relief.

Remedies for Infringement of Copyright
S.96 (2) of the CDPA makes available to the owner of a copyright all such relief by way of accounts, damages, injunctions or otherwise as is available in respect of the infringement of any other property right. In addition, there are the following special remedies for copyright owners. First, there is provision for additional damages under s.97 (2) CDPA where the justice of the case so requires. Secondly, the court can order a defendant to deliver up infringing copies of a copyright work to a claimant under s.99 for forfeiture or destruction under s.114. Finally, there is a limited right under s.100 (1) to seize goods offered for sale and hire outside a permanent or regular place of business. An application for delivery up and forfeiture must be made by issuing a claim form or, if made in existing proceedings, by application notice in those proceedings. Such claim form or application notice must be served on all persons having an interest in the relevant items.

Limitation of Power to award Damages
S.97 (1) CDPA provides that where in an action for infringement of copyright the defendant show that at the time of the infringement he or she did not know, and had no reason to believe, that copyright subsisted in the work to which the action relates, the claimant is not entitled to damages against him or her. However, this limitation does not preclude any other remedy.

Undertaking to take Licence of Right
Where licences are available as of right pursuant to s.144 CDPA following a report by the Competition Commission s.98 prohibits any injunction or order for delivery up being made against a defendant who undertakes to take such a licence on terms to be agreed or in default of agreement settled by the Copyright Tribunal. Damages or moneys due upon an account of profits are limited to twice the amount of the licence fee that would have been payable under such a licence had it been obtained before the earliest infringement. Such an undertaking may be given without admitting liability at any time before a final order in the infringement proceedings.
 

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